The Complainant is Arcelormittal S.A. of Luxembourg, represented by Nameshield, France.
The Respondent is Zhao Zhong Xian of Shenyang, Liaoning, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2016. On September 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 4, 2016, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant submitted a request that English be the language of the proceeding on October 5, 2016. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on October 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2016.
The Center appointed Jonathan Agmon as the sole panelist in this matter on November 8, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is Arcelormittal S.A., a multinational steel manufacturing corporation. The Complainant is one of the largest steel producing companies in the world and it is a market leader, which operates in more than 60 countries.
The Complainant is the owner of a trademark registration for the mark ARCELORMITTAL - International trademark registration No. 947686, registered on August 3, 2007.
The Complainant is the owner of numerus domain names incorporating the ARCELORMITTAL trademark: , , , and more.
The disputed domain name was registered on September 20, 2016.
The disputed domain name currently resolves to an inactive webpage. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to its distinctive trademark. Moreover, the Complainant argues that the addition of the generic Top-Level Domain (“gTLD”) “.website” is not sufficient to escape the finding of the disputed domain name being identical to the Complainant’s ARCELORMITTAL trademark.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant further argues that the Respondent is not known by the Complainant and that the Complainant does not carry out any activity for, nor has any business with the Respondent and has neither licensed nor authorized nor granted the Respondent to make any use of its trademark or the registration of the disputed domain name.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith.
The Complainant further argues that given its trademark distinctiveness and reputation it is inconceivable that the Respondent could have registered the disputed domain name without actual knowledge of the Complainant’s rights over its ARCELORMITTAL trademark.
The Complainant further contends that the Respondent incorporation of a famous mark into a domain name, without operation of a website under it, may be evidence of bad faith registration and use.
The Complainant further contends that the Respondent has maintained the disputed domain name in order to prevent the Complainant to register its trademark as a domain name under the “.website” extension, and this is another indication of the Respondent’s bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese, as confirmed by the Registrar in its verification email to the Center of September 27, 2016.
The Complainant requested that the language of the proceeding be English.
The Complainant, located in Luxembourg, claims that it does not communicate in Chinese and submitting all documents in Chinese would entail substantial translation expenses on it.
The Respondent did not respond to the Complainant’s language request.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese letters;
(ii) The Respondent having been notified of the proceeding in both Chinese and English failed to submit any comment on the language of the proceeding, or to provide any response to the Complaint;
(iii) The Complainant has no knowledge of Chinese, and in the present case, the use of a language other than English would impose a significant burden on the Complainant in view of the facts in question.
Upon considering the above, the Panel determines that English be the language of the proceeding. 6.2 Substantive Matters A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of different ARCELORMITTAL trademarks.
The disputed domain name reproduces entirely the Complainant’s ARCELORMITTAL trademark with the addition of the gTLD “.website”.
The addition of the gTLD suffix “.website” does not have the capacity to distinguish the disputed domain name from the Complainant’s ARCELORMITTAL registered trademark and is disregarded when comparing the disputed domain name with the Complainant’s trademark. See Volkswagen AG v. Todd Garber,WIPO Case No. D2015-2175; see also Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan,WIPO Case No. D2015-1733; Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to the ARCELORMITTAL trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services.
The Respondent has not submitted any substantive Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the ARCELORMITTAL trademark since at least the year 2007. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The disputed domain name is identical to the Complainant’s trademark. Previous UDRP panels have found that “[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site”. (See E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095.) To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith.
Having regard to the evidence, the Panel finds that the disputed domain name was registered and is being used by the Respondent with knowledge of the Complainant and in bad faith with the intent to create an impression of an association with the Complainant. The Respondent’s actions therefore constitute bad faith. (See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.)
Also, the disputed domain name is currently inactive which can, in appropriate circumstances, indicate the Respondent’s bad faith. (See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.)
Based on the evidence that was presented to the Panel, including the Complainant’s registered trademark, the use of the Complainant’s trademark in the disputed domain name, the passive use of the disputed domain name and the Respondent’s failure to answer the Complaint, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: November 22, 2016
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